adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Suspa Holding GmbH v. Noorinet

Case No. D2011-0975

1. The Parties

The Complainant is Suspa Holding GmbH of Germany, represented by Price, Heneveld, Cooper, DeWitt & Litton of United States of America.

The Respondent is Noorinet of Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <movotec.com> is registered with Netpia.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2011. On June 8, 2011, the Center transmitted by email to Netpia.com. Inc. a request for registrar verification in connection with the disputed domain name. On June 9, 2011, Netpia.com. Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On June 17, 2011, the Center issued a Language of Proceeding notification, inviting comment from the parties. On June 21, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not respond to the Center’s Language of Proceeding notification. On June 23, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2011.

The Center appointed Young Kim as the sole panelist in this matter on July 21, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of U.S. Federal Trademark Registration No. 1,778,966 for MOVOTEC, which was registered in 1993 in association with mechanical and hydraulic height adjusting devices in International Class 20. In addition, the Complainant owns and maintains multiple trademark registrations for MOVOTEC throughout the world, including Australia, Brazil, Canada, Switzerland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), Republic of Korea, New Zealand, Singapore, Benelux, China, Germany, France, Italy, Japan, Austria, Portugal and Hungary.

The disputed domain name <movotec.com> was first registered on October 23, 2005 and then updated on October 28, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends that in addition to the trademark registrations for MOVOTEC in a number of countries, it also has common law rights in and to the mark MOVOTEC since it has used the mark in commerce for many years.

The Complainant contends that the disputed domain name <movotec.com> is identical to the Complainant’s registered trademark MOVOTEC.

The Complainant further contends thatInternet users who are looking for information on Complainant’s MOVOTEC products are likely to use a search engine, such as “www.google.com,” to locate product information. The Complainant contends that searching the word “movotec” provides a listing of hyperlinks that will direct the Internet user to various websites, including both the Complainant’s website “www.suspa.com,” as well as the Respondent’s website “www.movotec.com.” The Complainant contends that a confused Internet user is likely to click on the Respondent’s “www.movotec.com” hyperlink looking for information on the Complainant’s MOVOTEC products and be directed to the Respondent’s website, which includes hyperlinks to several companies that offer similar products to the Complainant.

Accordingly, the Complainant contends that the disputed domain name <movotec.com> is confusingly similar to the Complainant’s registered trademark MOVOTEC.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not been granted consent or a license, express or implied, to use the MOVOTEC mark in a domain name or in any other manner. The Complainant also contends that it is also the Complainant's belief that the Respondent has never been known, recognized, or otherwise associated with the disputed domain name.

The Complainant contends that it believes that the Respondent is using the disputed domain name as a vehicle by which the Respondent makes revenue on pay-per-click advertising. The Complainant contends that the Respondent is simply using the disputed domain name to misdirect Internet traffic to the Respondent’s own advertising website in hopes of providing business to the Complainant’s competitors who presumably pay for this service. The Complainant contends that the use of a well-known mark with the intent to divert Internet users to a website sponsored by the Respondent, which includes pay-per-click hyperlinks, is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, and it is not a legitimate, noncommercial, or fair use pursuant to paragraph 4(c)(iii) of the Policy.

The Complainant contends that the Respondent knew of the Complainant’s trademark MOVOTEC at the time of obtaining the disputed domain name and so acted in bad faith when procuring the disputed domain name. The Complainant contends that it engages in extensive marketing and advertising, including brochures and mailings that feature its name and mark. The Complainant contends that its website receives a great deal of traffic and would have been discovered by the Respondent if the Respondent would have conducted even minimal Internet searching. In addition, the Complainant contends that its rights in the MOVOTEC mark would have been readily discovered if the Respondent had conducted a basic domain name search or a basic word search on the Internet of the Trademark Office records of Australia, Brazil, Canada, Switzerland, United Kingdom, New Zealand, Singapore, United States of America, Benelux, China, Germany, France, Italy, Japan, Austria, Portugal, Hungary, and, most significantly, Republic of Korea, which is where both the registrar and registrant are located. The Complainant also contends that most of these registrations were granted in the early 1990s.

The Complainant contends that it is inconceivable that the Respondent’s use of a mark identical to the Complainant’s registered mark can be construed to be anything but in bad faith. The Complainant contends that the Respondent’s bad faith is supported by its interest in commercial gain by way of what appear to be paid advertising hyperlinks. The Complainant contends that the Respondent knew harm would come to the Complainant as a result of the Respondent’s activities.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Language of the Proceeding

The Complaint was filed in English. Pursuant to paragraph 11 of the Rules, in the absence of any agreement between the parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Panel notes that the language of the proceeding for this case would be Korean, being the language of the relevant registration agreement in the absence of any express agreement to the contrary by the parties.

Under the Rules, the Panel has the authority to determine the language of the proceeding. The Complainant has submitted a request that English be the language of the proceeding. The Panel notes that the Respondent operates the website of the disputed domain name which advertises products in English. Further, the Respondent did not submit any response either to the Complaint or to the Center’s Language of Proceeding notification, raising no objection to the Complainant’s request that English be the language of the proceeding.

The Panel has considered the particular circumstances of this case carefully as well as the discretion given to her by paragraph 11(a) of the Rules. The Panel hereby determines that English shall be the language of the administrative proceeding in this case.

Discussion

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark to which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Each of these three elements is discussed below.

A. Identical or Confusingly Similar

The disputed domain name <movotec.com> is confusingly similar to the trademark MOVOTEC since it is only different in “.com” which has no distinctiveness. Thus, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no connection or affiliation with the Complainant and has not beengranted consent or a license, express or implied, to use the MOVOTEC mark in the disputed domain name or in any other manner. Further, the Complainant contends that it is also the Complainant’s belief that the Respondent has never been known, recognized, or otherwise associated with the disputed domain name.

The Complainant further contends that it believes that the Respondent is using the disputed domain name as a vehicle by which the Respondent makes revenue on pay-per-click advertising. The Complainant contends that the Respondent is simply using the disputed domain name to misdirect Internet traffic to the Respondent’s own advertising website in hopes of providing business to the Complainant’s competitors who presumably pay for this service. The Complainant contends that the use of a well-known mark with the intent to divert Internet users to a website sponsored by the Respondent, which includes pay-per-click hyperlinks, is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, and it is not a legitimate, noncommercial, or fair use pursuant to paragraph 4(c)(iii) of the Policy.

On the other hand, the Respondent did not submit any response or argument to the Complaint. There was no explanation or assertion from the Respondent that the Respondent has rights or legitimate interests with respect to the disputed domain name.

Thus, the Panel finds that the Complainant has established that the condition of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent knew of the Complainant’s trademark MOVOTEC at the time of obtaining the disputed domain name and so acted in bad faith when procuring the disputed domain name. The Complainant contends that it engages in extensive marketing and advertising, including brochures and mailings that feature its name and mark. In addition, the Complainant contends that its rights in the MOVOTEC mark would have been readily discovered if the Respondent had conducted a basic domain name search or a basic word search on the Internet of the Trademark Office records of a number of countries, most significantly Republic of Korea, which is where both the registrar and registrant are located. The Complainant also contends that most of these registrations were granted in the early 1990s.

The Panel notes that the Complainant’s trademark MOVOTEC was registered in Republic of Korea in 1993, well before the disputed domain name was first registered in 2005. Since the trademark registration was published in an official gazette in Republic of Korea, the Panel notes that the Respondent had constructive notice of the Complainant’s trademark MOVOTEC.

In addition, the Complainant contends that it is inconceivable that the Respondent’s use of a mark identical to the Complainant’s registered mark can be construed to be anything but in bad faith. The Complainant contends that the Respondent’s bad faith is supported by its interest in commercial gain by way of what appear to be paid advertising hyperlinks.

On the other hand, the Respondent did not submit any response or argument to the Complaint.

In view of the above, the Panel finds that the Complainant has established that the condition of paragraph 4(a)(iii) of the Policy is met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <movotec.com> be transferred to the Complainant.